Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Sc a/k/a Steven Carey
Claim Number: FA0605000701175
Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively, “Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is Sc a/k/a Steven Carey (“Respondent”), 56 Terrigal, Melbourne, VIC 3136, AU.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <martinalehubbel.com>, <martinalehubbell.com>, <martyndale.com>, <martin-dale.com>, <martindalelawyers.com> and <martindalehuball.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J.Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2006.
On May 5, 2006, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <martinalehubbel.com>, <martinalehubbell.com>, <martyndale.com>, <martin-dale.com>, <martindalelawyers.com> and <martindalehuball.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@martinalehubbel.com, postmaster@martinalehubbell.com, postmaster@martyndale.com, postmaster@martin-dale.com, postmaster@martindalelawyers.com, and postmaster@martindalehuball.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchuirch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <martinalehubbel.com>, <martinalehubbell.com>, <martyndale.com>, <martin-dale.com>, <martindalelawyers.com> and <martindalehuball.com> domain names are confusingly similar to MARTINDALE-HUBBELL mark.
2. Respondent does not have any rights or legitimate interests in the <martinalehubbel.com>, <martinalehubbell.com>, <martyndale.com>, <martin-dale.com>, <martindalelawyers.com> and <martindalehuball.com> domain names.
3. Respondent registered and used the <martinalehubbel.com>, <martinalehubbell.com>, <martyndale.com>, <martin-dale.com>, <martindalelawyers.com> and <martindalehuball.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Reed Elsevier Properties Inc., owner of the MARTINDALE-HUBBELL marks, and Reed Elsevier Inc., licensee of the marks, together are the Complainant in this case. Complainant, through one of its operating divisions, Martindale-Hubbell and its predecessors in interest, is in the business of providing information and directory services in the fields of law and business under the MARTINDALE-HUBBELL mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MARTINDALE-HUBBELL mark (Reg. No. 1,542,506 issued June 6, 1989). Complainant also holds a valid trademark registration for the MARTINDALE-HUBBELL mark in Australia (Reg. No. 878336 issued June 7, 2001). Complainant also holds other trademarks for various forms of the MARTINDALE-HUBBELL mark in both the United States and Australia.
Respondent registered the <martinalehubbell.com>, <martyndale.com>, <martin-dale.com>, <martindalelawyers.com>, and <martindalehuball.com> domain names on October 31, 2004 and the <martinalehubbel.com> domain name on October 9, 2005. Respondent’s disputed domain names resolve to websites that display links to third-party websites, some of which are in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s federal trademark registrations with the USPTO, as well as those in Australia, sufficiently establish Complainant’s rights in the MARTINDALE-HUBBELL mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s MARTINDALE-HUBBELL mark pursuant to Policy ¶ 4(a)(i). Respondent’s <martinalehubbel.com>, <martinalehubbell.com>,<martyndale.com>, and <martindalehuball.com> domain names contain misspelling of the terms within the Complainant’s mark. In Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000), the panel found that the <davemathewsband.com> domain name incorporated a common misspelling of the DAVE MATTHEWS BAND mark and therefore was confusingly similar. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES). The disputed domain names are also phonetically similar to the Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark); see also Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”).
Similarly, the Panel finds that the addition of a hyphen to
Complainant’s mark in the <martin-dale.com> domain name is not
enough to negate the confusing similarity between Complainant’s mark and the
disputed domain name pursuant to Policy ¶ 4(a)(i). In Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb.
Forum Sept. 23, 2003), the panel found that the addition of a hyphen to
Complainant's mark did not create a distinct characteristic capable of overcoming
a Policy ¶ 4(a)(i) confusingly similar analysis. See Nintendo of Am. Inc. v. This Domain Is For Sale,
D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and
confusingly similar the complainant’s GAME BOY mark, even though the domain
name is a combination of two descriptive words divided by a hyphen).
Moreoever, the addition of a term to Complainant’s mark is not enough to negate the confusing similarity between Complainant’s mark and the <martindalelawyers.com> domain name. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). The Panel finds that despite the addition of a term to Complainant’s trademark, the disputed domain name is confusingly similar to the Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain names. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to resolve whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use Complainant’s MARTINDALE-HUBBELL mark, and Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by any of the disputed domain names. In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) the panel found that given the WHOIS domain name registration information, Respondent is not commonly known by the <awvacations.com> domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Therefore, the Panel finds that Respondent is not known by the disputed domain names under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is
using the disputed domain names to operate websites providing links to third-party
websites that offer services in direct competition with Complainant's
business. In Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the panel found that the respondent
was neither using the domain names for a bona fide offering of goods or
services nor a legitimate noncommercial or fair use because the respondent used
the domain names to divert Internet users to a website that offered services
that competed with those offered by the Complainant under its marks. See Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a
domain name for commercial benefit by diverting Internet users to a website
that sold goods and services similar to those offered by the complainant and
thus, was not using the name in connection with a bona fide offering of
goods or services nor a legitimate noncommercial or fair use). Therefore, in the instant case, the Panel
finds that Respondent’s use of Complainant’s MARTINDALE-HUBBELL mark in the
disputed domain names does not constitute a bona fide offering of goods
or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to websites that display links to third-party websites that are unrelated to Complainant, some of which are in direct competition with Complainant. Thus, the Panel finds that Respondent registered and used Complainant’s mark with the intent to disrupt Complainant’s business. Such conduct is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site).
Furthermore, Respondent is using the disputed domain names
to divert Internet users to its website that displays links to third-party
websites, some of which are in direct competition with Complainant. Consequently, the Panel finds that
Respondent registered and used the disputed domain names with the intent to
divert Internet users and thus benefit commercially. Consequently, the Panel finds that Respondent’s conduct evidences
bad faith registration and use of the disputed domain names under Policy ¶
4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <martinalehubbel.com>, <martinalehubbell.com>, <martyndale.com>, <martin-dale.com>, <martindalelawyers.com> and <martindalehuball.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 19, 2006
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